Sanofi v Privacy Department, IceNetworks Ltd

WIPO Case No. D2024-3660

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sanofi v. Privacy Department, IceNetworks Ltd.

Case No. D2024-3660

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Privacy Department, IceNetworks Ltd., Iceland.

2. The Domain Name and Registrar

The disputed domain name <stilnoxshop.com> (the “Domain Name”) is registered with Internet Domain

Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10,
2024. On September 10, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Name. On September 11, 2024, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the Domain
Name which differed from the named Respondent (Domain Admin, Whois Privacy Corp.) and contact
information in the Complaint. The Center sent an email communication to the Complainant on
September 12, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting
the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the

Complaint on September 18, 2024.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2024.

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The Center appointed Michelle Brownlee as the sole panelist in this matter on October 17, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a French company that was established in 2004 by a merger between Aventis and that employs 100,000 people in 100 countries. It is the fourth largest pharmaceutical company in the world in prescription sales and also develops over-the-counter medication. The Complainant produces and sells under the trademark STILNOX a drug used for the treatment of insomnia.
Sanofi-Synthélabo resulting in a successor company with the name Sanofi-Aventis. In 2011, the

The Complainant owns numerous registrations for the trademark STILNOX for pharmaceutical products in jurisdictions around the world, including the following:

- French Trademark Registration Number 1263152, registered on March 1, 1984

- International Trademark Registration Number 485741, registered on May 21, 1984

- Australian Trademark Registration Number 434381, registered on October 9, 1985

- Mexican Trademark Registration Number 546603, registered on April 24, 1997

The Complainant also owns the domain names <stilnox.com>, <stilnox.net>, <stilnox.org>, <stilnox.info>, and <stilnox.it>, among others.

The Domain Name was registered on June 1, 2023. There is no active web site associated with the Domain are unable to access stilnoxshop.com.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

Notably, the Complainant contends that it has rights in the STILNOX trademark, that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent registered and is using the Domain Name in bad faith. The Complainant notes that the term STILNOX is a distinctive, invented term that has no other meaning besides its trademark significance, which the Complainant argues establishes both that the Respondent could not have a legitimate interest in the Domain Name and that the Respondent registered the Domain Name in bad faith, since no one other than the Complainant would have a reason to use the term. The Complainant also notes that the Respondent registered the Domain Name in the name of a privacy service in order to keep the Respondent’s identity secret. The Complainant argues that even though the Respondent has held the Domain Name passively, in this case it is appropriate to find bad faith because of the distinctiveness of the STILNOX trademark as well as the concealment of the Respondent’s identity and the Respondent’s failure to respond to the Complaint.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview
3.0, section 1.2.1.

The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term here, “shop”, may bear on assessment of the second and third elements,
the Panel finds the addition of such term does not prevent a finding of confusing similarity between the

Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

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Panels have found that the non-use of a domain name (including a page with no substantive content on it,
such as the blocked page message in this case) would not prevent a finding of bad faith under the doctrine of
passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes
the distinctiveness or reputation of the Complainant’s trademark, the composition of the Domain Name, and
that the Respondent concealed its identity using a privacy service and did not respond to the Complaint, and
finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a

finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <stilnoxshop.com> be transferred to the Complainant.

/Michelle Brownlee/
Michelle Brownlee
Sole Panelist
Date: October 31, 2024